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1 John Mason, Jf. (SBN 51116) Scott N. Weston (SEN 130357)
Jonathan B. Altscbul (SBN 234244) Patrick 1. Hagan (SBN 266237) FOX
ROTHSCHILD LLf 1800 Century Park East, 3 r Floor Los Angeles,
California 90067-3005 Tel 310.598.4150/ Fax 310.556.9828
jmaSOnlfoxrothschild.com sweston mfoxrothschild.com jaltschul
foxrothschild.com phagan@ oxrothschild.com
1 , .. ' 3 , \ .
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Neal S. Cohen (pro hac vice application to be filed) FOX
ROTHSCHILD LLP 1225 17th St., Suite 2200
9 Denver, Colorado 80202 Tel 303.292.1200 / Fax 303.292.1300
10 [email protected]
II Attorneys for Plaintiff 12 WILLIAM ROBINSON, JR.
13
14
15
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
16
17 WILLIAM ROBINSON, JR., an individual,
18
19 vs.
Plaintit1~
20 CLAUDETTE ROGERS ROBINSON, an individual, 2]
22 Defendant.
~YEt~. -170 1 JI\Iz.~fJf(i COMPLAINT FOR DECLARA TORY RELIEF
COMPLAINT
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1 Plaintiff William Robinson, Jr. ("Plaintiff') hereby alleges
as follows: 2 SUMMARY OF ACTION
3 1. This is a civil action for declaratory relief arising from
adverse and
4 erroneous claims by Plaintiffs ex-wife, Defendant Claudette
Rogers Robinson
5 ("Defendant"), of ownership in certain copyrights to musical
compositions 6 prospectively belonging to Plaintiff alone pursuant
to the 1976 Copyright Act,
7 specifically 17 U.S.C. sections 304 and 203.
8 2. Defendant did not write any part of the musical
compositions at issue.
9 Plaintiff wrote them during the parties' marriage, which ended
in 1986. As each
10 composition was completed, Plaintiff immediately assigned the
original copyright
11 in it to a music publisher.
12 3. As the sole author of the musical compositions at issue,
Plaintiff has
13 the exclusive right, but not the obligation, to terminate his
assignments of the
14 copyrights after a certain number of years. Plaintiff has
properly issued
15 termination notices for all currently-eligible copyrights
through December 31,
16 2013, and may continue to do so for the remaining
copyrights.
17 4. Defendant claims that the copyrights Plaintiff has
recaptured and may
18 continue to recapture upon termination of the assignments to
the music publisher
19 belong in part to her pursuant to California community
property law. However, the
20 1976 Copyright Act expressly provides that these "recaptured"
copyrights belong
21 to the author alone, which is Plaintiff. Moreover, the 1976
Copyright Act
22 precludes any transfer of those copyrights before the
terminations themselves are
23 effective. Thus, any transfer of such rights to any third
party, whether Defendant
24 or a music publisher, was barred by the 1976 Copyright Act,
and is therefore null
25 and void.
26 5. Plaintiff seeks a judicial declaration confirming his
exclusive 27 ownership of all copyrights, interests therein, and
income therefrom ("Termination 28 Rights") arising from his
termination and recapture of his copyright assignments.
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1
2 6.
PARTIES
Plaintiff is an individual residing in the City and County of
Los
3 Angeles, California.
4 7. On infonnation and beliet~ Defendant is an individual
residing in the 5 County of Los Angeles and the City of Beverly
Hills, California.
6
7 8.
JURISDICTION AND VENUE This Court has exclusive jurisdiction
over the subject matter of this
8 action pursuant to 28 U.S.C. 1338(a), as well as 28 U.S.C.
1331 and 2201, as well 9 as the Copyright Act of 1976, 17 U.S.C.
sections 101 et seq. Venue is proper in
10 this Court pursuant to 28 U.S.C. section 1391, subsections
(b)(1), (b)(2), and (c)(I) 11 because, on infonnation and belief,
Defendant resides, is domiciled, and took
12 adverse action in this judicial district. 13 FACTUAL
BACKGROUND 14 9. Plaintiff is a living recording artist and
songwriter.
15 10. During the course of his songwriting career, in
accordance with a
16 series of single-song agreements and/or an exclusive
songwriter'S agreement,
17 Plaintiff assigned the copyrights in each of his musical
compositions as he created
18 them to Jobete Music Co., Inc. ("Jobete"). 19 11. On November
7, 1959, PlaintitT married Defendant. The couple lived
20 in Detroit and had two children together. In 1972, they moved
to Los Angeles.
21 12. Plaintiff and Defendant separated on or about May 30,
1985. They
22 divorced in California in 1986. As a result of the divorce,
all copyrights, contract,
23 and/or royalty rights to the musical compositions created
between November 7,
24 1959 and May 30, 1985 were purportedly divided between
Plaintiff and Defendant
25 as tenants-in-common. Defendant also received a monthly
spousal support
26 payment of substantial sums and significant real and personal
property.
27 13. Defendant did not write any part of any of the musical
compositions at
28 issue; her interest was awarded on the basis of community
property principles
2 COMPLAINT
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1 alone.
2 14. In 2002, Plaintiff married his current wife, Frances. They
currently
3 reside in Los Angeles.
4 15. Beginning in or around 2012, more than 25 years after
Plaintiff and
5 Defendant separated, Plaintiff began issuing notices of
termination of copyright
6 assignment to Jobete pursuant to Section 304(c) of the 1976
Copyright Act. The 7 limited right to transfer his "recaptured"
copyrights to the original assignee arose
8 immediately. The first termination is effective this year;
subsequent terminations
9 continue to take effect on an ongoing basis. Plainti ff has
not yet reassigned any of
10 the copyrights "recaptured" by him pursuant to Section 304 or
Section 203, but he
11 is actively negotiating for the sale of those rights.
12 16. Aware of Plaintiffs search for a new buyer/administrator
for his
13 "recaptured" copyrights, Defendant sent SESAC, Inc.
("SESAC"), a performing 14 rights organization based in Nashville,
a letter purporting to provide notice of
15 Defendant's alleged interests in Plaintiffs "recaptured"
copyrights. In this written
16 notice, a true and correct copy of which is attached hereto
as Exhibit A, Defendant
17 stated in pertinent part as follows:
18
19
20
21
22
23
24
25
26
The Further Judgment clearly requires that Smokey execute
copyright assignments m favor of Ms. Robinson, and he has faIled to
do so. Nonetheless, under the Decree, Ms. Robinson is legally
entitled to directly receive p'!yment of her half of all receipts
from these songs. ASCAP and other third parties have been paying
Ms. Robinson directly. Accordingly, in the event that SESAC and
Smokey are explormg a new business relationship, Ms. Robinson would
be interested in exploring a. move of her half of the [musical
compositions] to SESAC, should Smokey decide to move his half and
if the deal were accepta51e to her. Ms. Robinson is entitled to
500/0 of any moneys hereafter payable on the CMCs. Similarly, Ms.
Robmson would be entitled to 50% of any advance, unless that
advance is recoupable only from Smokey's 50% interest in the songs
and not recoupable against Ms. Robinson's half.
27 17. Furthennore, in an email from Defendant's counsel to
Plaintiffs
28 counsel dated December 6,2013, Defendant's counsel stated in
pertinent part the
COMPLAINT
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2
3
4
following:
[Olnce title reverts to [Plaintiff] we will want to have
assIgnments executed for filing with the copyright office so that
the official records accurately reflect that [Defendant] owns 50%
of the copyright.
5 A true and correct copy of the email is attached hereto as
Exhibit B.
6 18. Defendant's notice and statements therein are incorrect
and prejudicial 7 to Plaintiff because Defendant has no interest in
any copyrighted musical
8 composition authored by Plaintiff the assignment of which was
terminated
9 pursuant to Section 304 or Section 203. Defendant's notice
could jeopardize 10 Plaintiffs ability to secure agreements for his
currently-vested termination rights
11 and/or prospectively "recaptured" copyrights, and compels him
to seek declaratory
12 relief by filing this action.
CAUSE OF ACTION 13
14 FOR DECLARATORY RELIEF [28 U.S.C. 2201-2202] 15 19. Plaintiff
realleges and incorporates herein by reference the preceding
16 paragraphs.
17 20. There is an actual and justiciable controversy between
Plaintiff and 18 Defendant in that Defendant claims interests in
copyrights which, following the
19 termination of their assignment to Jobete, belong or will
belong exclusively to
20 Plaintiff pursuant to the 1976 Copyright Act.
21 21. Plaintiff s exclusive right in the "recaptured"
copyrights arises from
22 17. U.S.C. 203 and 304, which are part of the 1976 Copyright
Act. These 23 sections, particularly 203, were enacted to replace
the prior "renewal" 24 mechanism in the 1909 Copyright Act.
25 22. The renewal right in the 1909 Copyright Act was alienable
by contract
26 before it was recaptured. Accordingly, an author could
transfer the renewal term
27 along with the initial term, thereby depriving him or her of
any ability to negotiate
28 the sale of the renewal term after the composition had
achieved market success.
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1 23. In part to address that problem, Congress enacted in the
1976
2 Copyright Act a termination mechanism which allowed an author
to terminate a
3 copyright assignment after a certain period of time, thereby
permitting the author
4 to "recapture" his or her rights after the value of the
copyright has increased
5 through market recognition. See 17 U.S.C. 203. 6 24. For
pre-1978 copyright assignments, 304 permits an author to 7
terminate an assignment 56 years from the date the copyright was
secured. 17
8 U.S.C. 304(c). The right to terminate a copyright assignment
under 304, and 9 the extended term of protection for that
copyright, represents "a completely new
10 property right" created by Congress. For post-1978
copyrights, 203 permits an 11 author to terminate an assignment 35
years after the date of the assignment. See 17
12 U.S.C. 203(a). 13 25. The copyright assignment must be
terminated in a 5-year "termination
14 window" which runs from the 56th to the 61 st year after the
date the copyright was
15 secured. 17 U.S.C. 203(b)(3); 304(c)(3). To effect a
termination, the author 16 must serve a notice on the copyright
assignee. 17 U.S.C. 203(a)(4), 304(c)(4). 17 The notice must
precede the actual termination date by at least 2 years, but it
may
18 not be sent more than 10 years in advance. Id. The
termination right vests when
19 the notice is sent. 17 U.S.C. 203(b(2), (304( c)(6)(B). 20
26. Sections 203 and 304 expressly provide that the parties with
the right
21 to terminate and only those parties hold the rights in the
copyright whose
22 assignment was terminated. 17 U.S.C. 203(b)(2), 304(c)(6).
Thus, title in any 23 copyright terminated by Plaintiff vests
exclusively in Plaintiff.
24 27. To prevent the problem of authors selling their renewal
term with the
25 initial term of copyright, Congress expressly provided that:
"Termination of the
26 grant may be effected notwithstanding any agreement to the
contrary, including an
27 agreement to make a will or to make any future grant." 17
U.S.C. 203(a)(5); 28 304(c)(5). Thus, the author's right to
terminate is nontransferable - including by
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1 agreement or will - until the notice is sent to the assignee.
See id. Even then, it is
2 only transferable to the original assignee until the actual
date of termination. 17
3 U.S.C. 203(b)(3); 304(b)(6)(D). 4 28. Accordingly, Plaintiff
could not have transferred his "'recaptured"
5 copyrights to Defendant until after those copyrights were in
fact "'recaptured,"
6 which will not be until 2015 for the songs written in 1959,
the first year of
7 Plaintiff's and Defendant's marriage. Accordingly, Plaintiff
could not have
8 agreed, and in fact did not agree, to transfer those rights
during his marriage or
9 upon its dissolution.
10 29. Additionally, a copyright "recaptured" pursuant to 304(c)
11 constitutes an entirely different right which is separate from
the grant of the
12 original copyright. If such a copyright is "recaptured" after
the dissolution of the
13 author's marriage, it necessarily constitutes new property
which did not exist
14 during the marriage, and which could not have been
distributed to the community
15 upon divorce. Moreover, only the author has the right to
terminate an assignment
16 of his or her copyright, unless he or she is deceased, in
which case the author's
17 surviving spouse (i.e., the author's spouse at the time of
the author's death) may 18 exercise that right along with the
author's offspring. 17 U.S.C. 203(a)(2); 19 3 04( c)(1), (2). Thus,
the author's spouse does not have any right, even in part, to 20
terminate an assignment of copyright before the author's death.
21 30. Therefore, when Plaintiff recaptures his copyrights they
will be new
22 copyright interests, and they do not arise until 2015 at the
earliest, 30 years after
23 the end of the marriage between Plaintiff and Defendant.
24 31. In light of Defendant's notice to SESAC, there is
currently an actual
25 dispute between Plaintiff and Defendant as to the disposition
of the rights to,
26 interests in, and income from the extended terms of copyright
protection procured
27 by Plaintiff pursuant to sections 203 and 304 of the 1976
Copyright Act. In the
28 absence of a judicial declaration of title, Plaintiff will
be, and is now, unable to - 6 -
COMPLAINT
